DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings filed 4/25/2025 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13-21 (all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is no support in the original disclosure for the limitation “wherein the at least one identifier has an area, wherein the at least one identifier comprises a pattern formed over the area, wherein the pattern comprises at least one color variation thereacross.” Applicant argues the
specification describes that "the at least one identifier 36 can be a barcode (or barcodes)," including
"2D barcodes, such as QR codes or data matrices," "a 1D barcode," or "any optically recognizable element." See Application, 1 [0034]. Applicant argues said marks occupy an area and bears a pattern formed over that area, the pattern being defined by at least one variation in color (for example, contrasting light and dark cells) across the mark. Said argument is noted but is not persuasive because the supported cited by applicant and the claimed limitation do not agree in scope. Applicant seemingly concedes the limitation does not have explicit support in the original disclosure. Applicant also has failed to demonstrate the original disclosure implicitly supports said limitation. While certain identifiers (e.g. barcodes, 2D barcodes such as QR codes or dot matrices) are disclosed, applicant has not shown the pending limitation is implicitly supported by said examples or that the claim language is commensurate in scope with the examples disclosed in the original disclosure. If applicant intends for the claim to be limited to the examples disclosed, the claim should be amended to be commensurate with applicant’s argument. Applicant further argues the specification describes that "the identifiers 36 can be at least a portion of the pattern of the printed image 30” and that because the printed image 30 has color and visual pattern, an identifier comprised in a portion of the printed image likewise has an area and a pattern formed over that area that comprises at least one color variation thereacross. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. Furthermore, the examiner notes that merely because a printed image has certain characteristics (as applicant argues with regards to color and visual pattern), it does not mean that a subcomponent of said printed image (for example, the identifier) also has those same characteristics.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 13-21 (all pending claims) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. There is no antecedent basis for the term “the corresponding pattern of the EIR layer…”
Furthermore, said claims are held to be indefinite because it is unclear what is meant by the identifier “indicates the corresponding pattern of the EIR layer and a spatial location of the corresponding pattern of the EIR layer relative to the at least one identifier.” Specifically, claim 1 already requires that the EIR layer be applied on a portion of the printed image “to match a pattern of the printed image with a corresponding pattern of the EIR layer.” Since the claim requires the location and the pattern of the printed image and the corresponding pattern of the EIR layer to match, it is unclear how the additional requirement of indicating “the corresponding pattern of the EIR layer and a spatial location of the corresponding pattern of the EIR layer relative to the at least one identifier” differs from what was already claimed and what more it requires.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s)1-3, 5-11 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of KO (US 2021/0229414) and Sullivan (US 6,29,969).
Boucke teaches method comprising: applying a printed image (visual print layer) to a substrate (core) (0022) on a first side of the substrate, applying an embossed in register (EIR) layer on a side of the printed image opposite the substrate (0021).
Boucke is relied upon as above. Furthermore, it is noted that embossed-in-register printing is a process of aligning an embossed pattern with a printed pattern and printing the embossed pattern on the printed pattern to impart three-dimensional protrusion and depth to the printed pattern. Specifically, in embossed-in-register printing, a specific pattern is printed on a substrate material, an embossed or engraved pattern is aligned with the printed pattern, and then embossing printing is performed to provide the embossed or engraved pattern to the printed pattern (0002 of “Ko”). Boucke does not teach that alignment is achieved by the printed image comprising at least one identifier; detecting the at least one identifier. However, Ko teaches an EIR process wherein the method includes obtaining, by a sensor, information about the printed pattern of the print layer formed on one surface of the substrate; and controlling operation of the embossed-in-register device by a controller based on the information provided by the sensor about the printed pattern (0028). Thus, said information obtained from the sensor is understood to “indicate the corresponding pattern of the EIR layer.” It would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the alignment technique of Ko comprising a sensor obtaining information about a printed pattern to align the embossing and printing of an EIR film disclosed in Boucke. The motivation for doing so would have been because Ko teaches such a method ensures alignment of the print layer and embossed pattern.
Boucke in view of Ko is relied upon as above. Specifically, Ko teaches information about the printed pattern is obtained by the sensor and utilized to align the printing and embossing. Ko does not explicitly teach the information of the printed pattern should comprise an identifier that has “an area” and “a pattern formed on the area”. However, Sullivan teaches placing a printed mark on the leading edge of a sheet to be detected by a sensor to ensure alignment of the sheet for processing (col 5, lines 34+). The printed mark may then be subsequently cut off the sheet (col 5, lines 34+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a printed mark on the leading edge of the printed substrate disclosed in Boucke. The motivation for doing would have been that Sullivan teaches such a printed image is useful for printing a mark readable by a sensor to ensure alignment of the sheet during processing. Said printed mark is understood to read on the claimed “identifier” that has “an area” and “a pattern formed on the area”. Furthermore, said identifier is understood to indicate the spatial location of the corresponding pattern of the EIR layer relative to the identifier since said identifier is taught to align the EIR and print layers.
With regards to the limitation that the “a pattern comprises at least one color variation thereacross,” the use of multiple colors in the identifier is understood to be an aesthetic choice. The courts have held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.
With regards to claim 2, Boucke teaches applying the printed image to the substrate by printing ink on a film with the film coupled to the substrate (0022).
With regards to claim 3, Boucke teaches applying the printed image to the substrate by applying printing ink on a film and then applying the film with the ink printed thereon to the substrate (0022).
With regards to claim 5, Boucke teaches applying the EIR layer on the side of the printed image opposite the substrate and Ko teaches optically capturing (with an “sensor”) at least one identifier of the at least one identifier to aligning the corresponding pattern of the EIR layer with the pattern of the printed image based on the optically captured at least one identifier.
With regards to claim 6, Boucke teaches the substrate may comprises MDF or HDF (0003) herein understood to read on the claimed “fiber core”. Boucke’s method further comprises depositing a layer of adhesive between the substrate and the printed image (0022).
With regards to claim 7, Boucke teaches the layer of adhesive disposed between the substrate and the printed image comprises polyurethane reactive (PUR) adhesive (0022).
With regards to claim 8, Boucke teaches the printed image does not need to comprise a film (0022).
With regards to claim 9, Boucke teaches the image may be applied with ink jet printer (0019)-herein understood to read on the claimed water-based ink. With regards to claim 10, said ink is understood to inherently possess “an adhesive” since said ink adheres to the substrate.
With regards to claim 11, Boucke does not suggest a method comprising applying a layer of adhesive on the second side of the printed image.
With regards to claim 12, Sullivan teaches the at least one identifier is optically capturable (by an “sensor”) and Ko teaches using information regarding the printed image to permit alignment of the pattern of the printed image with the corresponding pattern of the EIR layer.
With regards to claim 16, Boucke teaches he pattern may comprises a wood grain pattern, a geometric pattern, an organic pattern, a stone pattern, or combination of images (0018).
With regards to claim 17, the prior does not teach a plurality of identifiers spaced along the longitudinal axis. However, the courts have held the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
With regards to claim 20, Boucke does not teach storing the final product as a roll. However, it is common in the art to roll a film into a finished roll for ease of storage and transport (see e.g. US 2019/0299583 at 0034).
With regards to claim 21, Sullivan teaches trimming the edge with the identifier from the remainder of the substrate.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of Ko (US 2021/0229414) and Sullivan (US 6,29,969), as applied to claims above, and further in view of Chen (2004/0086678).
Boucke is relied upon as above, but does not teach the UV-curable ink utilized to make the printed image. However, Chen teaches that UV-curable ink printed layers may be used in EIR laminates. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize UV curable ink to print the printed layer of Boucke. The motivation for doing so would have been the art teaches UV curable layers are suitable for use in printed layers subjected to EIR.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of Ko (US 2021/0229414), as applied to claims above, and further in view of Herring et al (US 2005/0257880).
Boucke in view of Ko and Sullivan is relied upon as above and teaches the print layer may include an identifier, but does not teach the identifier comprises a barcode. However, Herring teaches suitable embossable images for EIR films include 2D and 3D barcodes and other machine readable images (herein understood to anticipate the QR code or data matrix of claim 14). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize barcodes. Data matrix, or QR codes as the identifier. The motivation for doing so would have been Herring teaches such marks are known to be included in EIR laminates.
Response to Arguments
Applicant's arguments filed 7/13/2026 have been fully considered but are not persuasive.
Rejections Under 35 U.S.C. §§ 103
With regards to the rejection of claims 1-3, 5-11 and 15-20 under 35 U.S.C. § 103 as allegedly being unpatentable over US Patent Application No. 2024/0246316 to Boucke (hereinafter "Boucke") in
view of US Patent Application Publication No. 2021/0229414 to Ko (hereinafter "Ko") and Sullivan (US 6,29,969), applicant submits that the cited references do not disclose or suggest the feature of
"wherein the printed image comprises at least one identifier" that "has an area" and "comprises a
pattern formed over the area, wherein the pattern comprises at least one color variation
thereacross," as recited in claims 1, 18, and 19. The examiner respectfully disagrees for reasons of record.
Specifically, Applicant argues the Action incorrectly contends that "at least one color variation thereacross" relates to ornamentation and has no mechanical function. Specifically, applicant submits that the color variation is what is optically detected to locate the identifier and to align the EIR layer with the pattern of the printed image and is functional rather than ornamental. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the claims; the claims do not require that the color variation is what is optically detected to locate the identifier and to align the EIR layer with the pattern of the printed image as applicant argues. Furthermore, applicant argues (with regards to the 112 rejection) that a printed image inherently possess color variation thereacross. Since Sullivan teaches a printed optically recognizable mark, applicant’s own argument seems to suggest it inherently possess the claimed “color variation thereacross.”
Second, applicant argues each of independent claims 1, 18, and 19 has been amended to additionally recite that the at least one identifier "indicates the corresponding pattern of the EIR layer and a spatial location of the corresponding pattern of the EIR layer relative to the at least one identifier." Applicant argues the cited references, taken alone or in combination, do not disclose or suggest these features. The examiner respectfully disagrees for the reasons noted above.
Applicant further argues Sullivan's mark is not part of a printed image (or, in claim 18, the subassembly formed from the printed image). The examiner respectfully disagrees; Sullivan teaches the use of a printed mark as an “identifier” in EIR processes. It is unclear why a printed mark is not considered by applicant to be “part of a printed image”. The claim does not require the identifier to be embedded within a printed image; the claimed substrate may include an identifier on an edge (as disclosed in Sullivan) and a separate image; wherein said identifier and separate image collectively reading on the claimed “printed image” wherein the identifier is part of printed image. Applicant further argues Sullivan’s mark is not used to match a pattern of the printed image with a corresponding pattern of an EIR layer, as the claims require. Said argument is noted but is not persuasive for the reasons noted above in the rejection. Furthermore, said argument is not commensurate in scope with the claim. The claim requires to the at least one identifier to “indicate the corresponding pattern of the EIR layer and a spatial location of the corresponding pattern of the EIR layer relative to the at least one identifier” but does not require the identifier to be “used to match a pattern of the printed image with a corresponding pattern of an EIR layer.” The examiner further notes the claim requires the identifier to “comprise a pattern formed over the area” but the identifier is not limited to such pattern. Thus, the identified information from Ko and the identifier of Sullivan collectively can read on the claimed identifier.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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